Trademarks and servicemarks (colloquially, “marks”), are source-identifying words, graphics, colors, sounds, and smells which are protected at both the state and federal level and via both common law and state and federal statutory schemes.
Unlike patent rights, protection for marks requires that they be used in commerce. While registering marks is not necessary to protect them (i.e., litigate to prevent another from unfairly competing with you), registering your marks with the USPTO is advisable in that the federal framework – the Lanham Act1 – allows for the potential preemption of competing marks on a national scale and provides additional remedies in the event another infringes on those trademark rights.2 Further, marks may be registered on an international scale via the Madrid Protocol.3
Prior to applying for a trademark registration (or, to be prudent, before creating or using the mark in the first place) it is generally advisable to have a trademark search conducted. Not only will the USPTO examiner be conducting his own search, but even acquiring a registration does not ensure that another entity may have rights it seeks to enforce against you, either in a cancellation or interference proceeding before the USPTO’s Trademark Trial and Appeals Board (TTAB) or through outright litigation.
Unlike copyright-protectable assets, a mark must go through an application and prosecution phase before the USPTO (and, at the state level, a more-cursory review among the state’s roll of business names) wherein an examiner determines whether the mark is qualified to be registered. Qualifications are generally based on the strength of the mark (i.e., is it arbitrary or fanciful, or is it generic or merely descriptive of the associated goods/services) and whether there are other extant marks with which the applicant’s mark may create a likelihood of confusion.
Should the mark become registered, periodic renewal fees are necessary to maintain the registration.4
We maintain a growing trademark portfolio for our clients and have assisted sole proprietors, entrepreneurs, and established business with acquiring and enforcing their trademark assets. Au LLC’s trademark services generally comprise performing trademark “clearance” searches, preparing and filing applications, responding to office actions, ensuring that post-registration fees are paid and filings made, and enforcing our clients’ trademark right against would-be infringers.
1. 15 U.S.C. s 1051 2. 15 U.S.C. s 1114 3. 15 U.S.C. s 1141 4. 15 U.S.C. s 1059